Chicago Mercantile Exchange, Inc.

Patent Trials and Appeals Board

Apr 27, 2020

13918297 - (D) (P.T.A.B. Apr. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/918,297 06/14/2013 John Labuszewski 004672-12344Z-US 1974
12684 7590 04/27/2020
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LABUSZEWSKI, RICHARD CO, JOHN NYHOFF,
LORI ALDINGER, JAMES BOUDREAULT

Appeal 2019-003300
Application 13/918,297
Technology Center 3600
Before JEFFREY S. SMITH, JEREMY J. CURCURI, and
IFTIKHAR AHMED, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11, 13, 15–17, and 22–24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Chicago
Mercantile Exchange Inc. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to “methods and systems that process orders
for financial instruments.” Spec. ¶ 1. Claim 11, reproduced below, is
illustrative of the claimed subject matter:
11. A system comprising:
a match computing system comprising:
a request for quote computing system;
a central limit order book computing system linked
to the request for quote computing system;
a tangible computer readable medium containing
computer-executable instructions that when executed
cause the match computing system to perform the steps
comprising:
(a) receive an electronic order for a financial
instrument;
(b) determine if the electronic order for the
financial instrument is unmatched within a
predetermined time period and a price of the
electronic order is within a predetermined number
of tick levels of a best bid or best offer;
(c) when it is determined that the electronic
order is unmatched and the price of the electronic
order is within a predetermined number of tick
levels of a best bid or best offer in (b), routing the
electronic order to the request for quote computing
system;
(d) attempting to match the electronic order
at the request for quote computing system; and
a tangible computer readable medium containing
computer-executable instructions that when executed
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cause the match computing system to monitor the request
for quote computing system and the central limit order
book computing system.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Foster US 2002/0016761 A1 Feb. 7, 2002
Crosthwaite US 2004/0260640 A1 Dec. 23, 2004
Borro US 2006/0155635 A1 July 13, 2006
Lutnick US 2007/0162378 A1 July 12, 2007
Borsand US 7,426,490 B1 Sept. 16, 2008
Stevens US 7,676,424 B2 Mar. 9, 2010
Tilly US 2010/0191640 A1 July, 29 2010

REJECTIONS
Claims 11, 13, 15–17, and 22–24 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more. Final Act. 2–5.
Claims 11 and 15–17 are rejected under 35 U.S.C. § 103 as obvious
over Borro, Tilly, Borsand, and Foster. Final Act. 6–10.
Claim 13 is rejected under 35 U.S.C. § 103 as obvious over Borro,
Tilly, Borsand, Foster, and Lutnick. Final Act. 10–11.
Claim 22 is rejected under 35 U.S.C. § 103 as obvious over Borro,
Tilly, Borsand, Foster, and Crosthwaite. Final Act. 11–12.
Claim 23 is rejected under 35 U.S.C. § 103 as obvious over Borro,
Tilly, Borsand, Foster, and Stevens. Final Act. 12.
Claim 24 is rejected under 35 U.S.C. § 103 as obvious over Borro,
Tilly, Borsand, Lutnick, Foster, and Crosthwaite. Final Act. 13.
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OPINION
The Judicial Exception Rejection of Claims 11, 13, 15–17, and 22–24
The Examiner determines the following:
Claim 11 recites the steps of (a) receive an electronic
order for a financial instrument; (b) determine if the electronic
order for the financial instrument is unmatched within a
predetermined time period and a price of the electronic order is
within a predetermined number of tick levels of a best bid or
best offer; (c) when it is determined that the electronic order is
unmatched and the price of the electronic order is within a
predetermined number of tick levels of a best bid or best offer
in (b), routing the electronic order to the request for quote
computing system; and (d) attempting to match the electronic
order at the request for quote computing system. These steps
are related to receiving, collecting and comparing information
of the electronic order for a financial instrument with the
predetermined time and the tick levels of a best bid or best
offer. In addition, “receiving, collecting and comparing
information of the electronic order for a financial instrument” is
similar to other concepts that have been identified as abstract by
the courts, such as Collecting and comparing known
information (Classen). Therefore, it is reasonable to conclude
based on the similarity of the idea described in this claim to
several abstract ideas found by the courts that claim 11 is
directed to an abstract idea (Step 2A: Yes).
Final Act. 3; see also Final Act. 3–4 (determining the claims do not recite
significantly more than an abstract idea), Ans. 3–6.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Are the claims patent-eligible?
Step 1
Claim 11 recites a system, which falls with the “machine” category of
35 U.S.C. § 101. Thus, we must determine whether the claim recites a
judicial exception and fails to integrate the exception into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Independent claim 11 recites the following steps:
(a) receive an electronic order for a financial instrument;
(b) determine if the electronic order for the financial
instrument is unmatched within a predetermined time period
and a price of the electronic order is within a predetermined
number of tick levels of a best bid or best offer;
(c) when it is determined that the electronic order is
unmatched and the price of the electronic order is within a
predetermined number of tick levels of a best bid or best offer
in (b), routing the electronic order to the request for quote
computing system;
(d) attempting to match the electronic order at the request
for quote computing system; . . .
[(e)] monitor the request for quote computing system and
the central limit order book computing system.
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These steps (a)–(e) describe the process of matching orders, which is a
“fundamental economic principle[] or practice[].” 2019 Revised Guidance,
84 Fed. Reg. at 52. Thus, these steps recite the abstract concept of “[c]ertain
methods of organizing human activity.” Id.
In addition, steps (b) (“determine if . . . is unmatched . . . and . . . is
within”), (d) (“attempting to match”), and (e) (“monitor”) can be done by
human thought and a pen and paper, and are one or more of “observation,
evaluation, judgment, opinion.” Id. Thus, these steps recite the abstract
concept of “[m]ental processes.” Id
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). The abstract idea, even when automated
to reduce the burden on the user of what once could have been done with
pen and paper, remains an abstract idea. CyberSource, 654 F.3d at 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
Thus, we determine claim 11 recites a judicial exception.
Regarding claim 23, claim 23’s further recited step of “simultaneously
attempting to match the electronic order for the financial instrument at the
central limit order book computing system and the request for quote
computing system” describes additional parts of the abstract idea and
similarly recites the abstract concepts of “[c]ertain methods of organizing
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human activity” and “[m]ental processes.” 2019 Revised Guidance, 84 Fed.
Reg. at 52.
Step 2A, Prong Two
Because claim 11 recites at least one judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
In addition to the limitations of claim 11 discussed above that recite
abstract concepts, claim 11 further recites the following: a “match
computing system,” a “request for quote computing system,” a “central limit
order book computing system,” a “tangible computer readable medium.”
The Specification does not provide additional details that would distinguish
the additional limitations from a generic implementation. See Spec. ¶¶ 19
(“Various computer-readable media that are tangible and non-transitory may
be used.”), 21–24 (describing the “match computing system,” “request for
quote computing system,” and “central limit order book computing
system”). There is no indication that the computers used in the invention are
anything other than general purpose computers. See Spec. ¶¶ 19 (“Various
computer-readable media that are tangible and non-transitory may be
used.”), 21–24 (describing the “match computing system,” “request for
quote computing system,” and “central limit order book computing
system”).
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Specifically,
there is no improvement to the functioning of the computer, but, instead, the
computer merely implements the abstract idea. In this case, we do not see
any particular machine or manufacture that is integral to the claim; nor do
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we see any transformation. That is, we do not see any of the additionally
recited elements applying or using the judicial exception in any meaningful
way beyond generally linking the judicial exception to the recited elements.
Accordingly, we determine claim 11 is directed to a judicial exception
because it does not recite additional elements that integrate the recited
judicial exception into a practical application.
Regarding claim 23, claim 23 does not recite limitations in addition to
the limitations of claim 23 discussed above that recite abstract concepts.
Accordingly, we also determine claim 23 is directed to a judicial exception
because it does not recite additional elements that integrate the recited
judicial exception into a practical application. See Spec. ¶¶ 19, 21–24.
Is there something else in the claims that ensures that they are
directed to significantly more than a patent ineligible concept?
Step 2B
Because claim 11 is directed to a judicial exception, we next
determine, according to Alice, whether the claim recites an element, or
combination of elements that is enough to ensure that the claims are directed
to significantly more than a judicial exception.
In addition to the limitations of claim 11 discussed above that recite
abstract concepts, claim 11 further recites the following: a “match
computing system,” a “request for quote computing system,” a “central limit
order book computing system,” a “tangible computer readable medium.”
2019 Revised Guidance, Section III (B) (footnote 36) states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity
must be supported with a factual determination. For more
information concerning evaluation of well-understood, routine,
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conventional activity, see MPEP 2106.05(d), as modified by the
USPTO Berkheimer Memorandum.
The Berkheimer Memorandum, Section III (A)(1) states:
A specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or in a manner that indicates that the
additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such
additional elements to satisfy 35 U.S.C. § 112(a). A finding that
an element is well-understood, routine, or conventional cannot
be based only on the fact that the specification is silent with
respect to describing such element.
The Specification discloses “[v]arious computer-readable media that
are tangible and non-transitory may be used.” Spec. ¶ 19. The Specification
further discloses “[m]atch system 206 includes a central limit order book
system 208 and a request for quote system 210 and may be implemented
with one or more programmed computer devices.” Spec. ¶ 21. The
Specification further discloses “[c]entral limit order book system 208 may
receive and orders, such as orders 212 and 214 from trader systems 216 and
218 and match orders.” Spec. ¶ 22. The Specification further discloses
“[r]equest for quote system 210 may receive requests for quotes, publish or
otherwise distribute the requests and provide any quotes to a trading entity.”
Spec. ¶ 23. The Specification further discloses “[m]atch system 206 may be
configured or programmed to link central limit order book system 208 and
request for quote system 210.” Spec. ¶ 24.
Thus, the Specification describes the “match computing system,”
“request for quote computing system,” “central limit order book computing
system,” and “tangible computer readable medium” in a manner that
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indicates that these elements are sufficiently well-known that the
Specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a). See Spec. ¶¶ 19, 21–24; see also
Final Act. 3–4, Ans. 4–6.
Further, the Specification does not provide additional details about the
computers that would distinguish the recited components from generic
implementation individually and generic implementation in the combination.
See Spec. ¶¶ 19, 21–24; see also Final Act. 3–4, Ans. 4–6.
In view of Appellant’s Specification, the claimed computer
components are reasonably determined to be generic, purely conventional
computer elements. Thus, the claims do no more than require generic
computer elements to perform generic computer functions, rather than
improve computer capabilities.
Accordingly, we determine that claim 11 is not directed to
significantly more than a patent ineligible concept.
Regarding claim 23, claim 23 does not recite limitations in addition to
the limitations of claim 23 discussed above that recite abstract concepts.
Accordingly, we also determine claim 23 is not directed to significantly
more than a patent ineligible concept. See Spec. ¶¶ 19, 21–24; see also Final
Act. 3–4, Ans. 4–6.
Appellant’s principal arguments
Appellant presents the following principal arguments:
i. The claims recite a technological solution because the claims
“improv[e] efficiencies and operation of the electronic trading systems, thus
reducing computing load on the electronic components and computer
readable media.” Appeal Br. 8. The claims recite a technological solution
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because “[t]here is a need in the art for improved request for quote systems
and methods for trading financial products to allow traders to trade financial
instruments when liquid markets are not available.” Appeal Br. 8; see also
Reply Br. 2–3 (“The claimed invention is unique in that [it] combines the
request for quote process with the central limit order book and thereby
allows a trader to submit an electronic order into a central limit order book
and only if that order fails to match with a suitable counter order under
prescribed conditions, does the system automatically proceed to solicit
requests for quotes via a request for quote system thereby minimizing
unnecessary request for quote traffic.”), 3–6 (“The claimed invention
provides a specific implementation which effectively implements a
conditional processing of electronic orders whereby they are first submitted
to central limit order book computing system and only when the electronic
order remains unmatched under prescribed conditions, automatically route
the electronic order to a request for quote system.”).
ii. “Like in McRO, here, Appellants’ claim 11 recites ‘caus[ing]
the match computing system to monitor the request for quote computing
system and the central limit order book computing system’ in a manner
different from any technique used by humans before Appellants’ invention.”
Appeal Br. 10.
“[T]his recited novel arrangement of features in claim 11 enable[s]
improvements to the efficiencies and operation of the electronic trading
systems, thus reducing computing load on the electronic components and
computer readable media.” Appeal Br. 12 (citing Enfish).
“[C]laim 11 expressly recites an electronic trading system with a[]
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unique arrangement of three computing systems (a match computing system,
a request for quote computing system and a central limit order book
computing system).” Appeal Br. 13 (citing Bascom).
iii (a). There is no preemption because “the specific rules recited in
claim 11 are limited to a specific, non-conventional arrangement of three
computing systems (a match computing system, a request for quote
computing system and a central limit order book computing system).”
Appeal Br. 14; see also Appeal Br. 15–17.
iii (b). There is no preemption because of the specific limitation of
“simultaneously attempting to match the electronic order for the financial
instrument at the central limit order book computing system and the request
for quote computing system” as recited in claim 23.
iv. “The Office Action fails to meet its burden of proof under step
2B (or step 2) of the purported two-part Alice test because the Office Action
fails to follow the Federal Circuit’s holding in Berkheimer v. Hewlett
Packard.” Appeal Br. 17; see also Reply Br. 6–9.
v.
[T]oday’s two-step test seemingly arose from Federal Circuit
and district court decisions citing to the Alice-Mayo decisions
with only fleeting basis in the SME trilogy [(Subject Matter
Eligibility triliogy: Gottschalk v. Benson, Parker v. Flook, and
Diamond v. Diehr)] extoled by the U.S. Supreme Court as the
real guideposts to SME. [P]ursuant to a dominant preemption
analysis, the patent eligibility of claims 11, 13, 15–17, and 22–
24 is in favor of patent eligibility.
Appeal Br. 20–21.
vi. “[T]he Office Action impermissibly deviates from the intention
of the patent eligibility statute when it evaluates the inventiveness of the
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claims in relation to patent eligibility. When correctly analyzed under the
Patent Act of 1952, Appellants’ claims 11, 13, 15–17, and 22–24 would be
found patent eligible.” Appeal Br. 21.
vii. The rejection violates the Administrative Procedures Act
(APA). See Appeal Br. 21–22.
Regarding Appellant’s arguments (i) and (ii), these arguments do not
show any error because, as we explain above, the elements of claim 11 are
the abstract concepts of “[c]ertain methods of organizing human activity”
and “[m]ental processes.” 2019 Revised Guidance, 84 Fed. Reg. at 52. We
also explain that the claims do not recite additional elements that integrate
the recited judicial exception into a practical application, and are not
directed to significantly more than a patent ineligible concept. In short, the
claims recite a computer system for performing the abstract idea. Thus, on
the record before us, the claim limitations do not improve the functionality
of the various hardware components, nor do they achieve an improved
technological result in conventional industry practice. McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). More
particularly, we do not agree that the claimed invention improves the
technology as a whole. Put another way, the argued improvements are
improvements to, and a part of, the abstract idea of matching orders and do
not provide an improvement to an underlying technology.
Regarding Appellant’s arguments (iii (a)) and (iii (b)), these
arguments do not show any error because, as our reviewing court has
explained, “questions on preemption are inherent in and resolved by the
[section] 101 analysis,” and, although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
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demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); cf. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract”).
Regarding Appellant’s argument (iv), this argument does not show
any error because, as we explain above, the claims do not recite additional
elements that integrate the recited judicial exception into a practical
application, and are not directed to significantly more than a patent ineligible
concept. Our analysis above considers the claims in light of current USPTO
guidance, including the Berkheimer Memorandum. Further, as we explain
above, the Specification does not provide additional details about the
computer that would distinguish the recited components from conventional
components, and from generic implementation individually and generic
implementation in the combination. See Spec. ¶¶ 19, 21–24; see also Final
Act. 3–4, Ans. 4–6.
Regarding Appellant’s arguments (v), (vi), and (vii), these arguments
do not show any error because our analysis above considers the claims in
light of current USPTO guidance. In short, we apply the 2019 Revised
Guidance, and the 2019 Revised Guidance addresses Appellant’s arguments
regarding the correct way to analyze claims.
We, therefore, sustain the Examiner’s rejection of claims 11 and 23.
We also sustain the Examiner’s rejection of claims 13, 15–17, 22, and
24, which are not separately argued with particularity.

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The Obviousness Rejection of Claims 11 and 15–17 over Borro, Tilly,
Borsand, and Foster
The Examiner finds Borro, Tilly, Borsand, and Foster teach all
limitations of claim 11. Final Act. 6–9; see also Ans. 6–7.
The Examiner finds Borro teaches all limitations of claim 11 except
for a request for quote computing system linked to the central limit order
book computing system, and details of the determination including
unmatched within a predetermined time period and a price of the electronic
order is within a predetermined number of tick levels of a best bid or best
offer. See Final Act. 6–7.
The Examiner finds Tilly teaches a central limit order book computing
system linked to a request for quote computing system. Final Act. 7 (citing
Tilly ¶¶ 30–50, Figs. 2–3). The Examiner reasons
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
incorporate the request for quote system as taught by Tilly in
Borro since the claimed invention is merely a combination of
old elements, and in the combination each element merely
would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that
the results of the combination were predictable.
Final Act. 7.
The Examiner finds Borsand teaches details of the determination
including a price of the electronic order is within a predetermined number of
tick levels of a best bid or best offer. Final Act. 8 (citing Borsand col. 3, ll.
35–62, col. 6, ll. 26–55, Figs. 2–5). The Examiner reasons
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
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modify the system of the combination of Borro and Tilly to
include all the limitations above as taught by Borsand in order
to provide a price scale along with the inside market in the
combination of Borro and Tilly so that the bid and offer prices
in the order book module and the marketable orders in the
combination of Borro and Tilly would be determined more
quickly and accurately.
Final Act. 8.
The Examiner finds Foster teaches details of the determination
including unmatched within a predetermined time period. Final Act. 9
(citing Foster ¶ 22).
The Examiner reasons
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
modify the system of the combination of Borro, Tilly and
Borsand to include all the limitations above as taught by Foster
in order to provide a timer in the combination of Borro, Tilly
and Borsand so that the bid and offer prices in the order book
module and the marketable orders in the combination of Borro
and Tilly would be determined more quickly and accurately.
Final Act. 9.
Appellant presents the following principle arguments:
i. Regarding incorporating the request for quote system as taught
by Tilly into Borro, “[n]o objective reasoning is given for combining the
elements of each reference other than the allegation that the claimed
invention is merely a combination of old elements and a skilled person
would have recognized the outcome of the combination.” Appeal Br. 24.
Borro does not describe request for quotes, so it is not even
clear where a request for quote system would be included.
Borro routes information that does not include request for
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quotes. Clear[ly] it would not make sense to route the
information in Borro to a request for quote system.
Appeal Br. 25; see also Reply Br. 11 (“Appellants can identify no
teaching within Borro[] to add the mechanism of Tilly for handling NBBO
rejects.”), 12 (“[T]he Examiner fails to identify any rational basis, such as a
teaching or suggestion in Borro or Tilly, for one of ordinary skill in the art to
make the combination.”).
ii. “When viewed through the lens of the objective indicia [(the
length of the intervening time between publication dates of the prior art and
the claimed invention)], as opposed to the hindsight lens used in the Office
Action, Appellant’s pending claimed invention would not have been found
obvious over Borro, Tilly, Borsand, Foster, or their purported combination.”
Appeal Br. 26.
iii.
[O]ne of ordinary skill in the art would not be motivated to
combine the teachings of Tilly with those of Borsand. As
described above, Tilly teaches a specific mechanism by which
NBBO rejects are routed to a trade engine to generate a request
for price. Borsand describes a system for automatically
submitting orders to an electronic trading system on behalf of a
trader. Not only does the system of Tilly address a specific
problem, that Borsand is unrelated to, but these references teach
distinctly different systems directed to distinctly different
problems.
Reply Br. 12.
iv. “[T]he Examiner’s reasoning for combining Foster . . . is
similarly deficient.” Reply Br. 12.
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We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Regarding Appellant’s arguments (i) and (ii), these arguments do not
show any error for the following reasons.
Borro discloses “[t]rade data is processed at a plurality of match
servers. Trade data that remains unmatched may be stored in one or more
aging queues. Trade data is periodically retrieved from the aging queues and
attempts are made to match the unmatched trades.” Borro Abstract. Thus,
Borro discloses an unmatched electronic order for a financial instrument.
Tilly discloses “the exchange system 10 having a price for the security
or derivative that differs from a national best bid or offer price [(NBBO)].”
Tilly ¶ 35. Tilly further discloses “[t]he marketable order is routed to the
trade engine 24 (step 120), where a Request for Price (‘RFP’) message is
disseminated.” Tilly ¶ 35. Thus, Tilly discloses the NBBO reject order is
routed to the request for quote computing system.
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The routing of reject orders of Tilly is readily-applicable to Borro’s
unmatched electronic orders because Borro periodically attempts to match
the unmatched orders, and Tilly’s routing of NBBO reject orders is also an
attempt to match unmatched orders. See Borro Abstract, Tilly ¶ 35. In short,
adding Tilly’s routing to the request for quote computing system to Borro’s
processing of unmatched orders would have been a predictable use of prior
art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417; see also Final Act. 7.
Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Regarding Appellant’s arguments (iii) and (iv), according to our rules,
“[a]ny argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
37 C.F.R. § 41.41(b)(2). Thus, these arguments are waived.
Further, Appellant’s argument (iii) discusses differences between
Tilly and Borsand, but does not address with particularity the Examiner’s
findings and reasons with respect to applying certain teachings of Borsand to
the combination of Borro and Tilly. The Examiner articulated a reason to
combine Borsand’s teachings with the combination of Borro and Tilly that is
rational on its face and supported by evidence drawn from the record. See
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Final Act. 8 (“so that the bid and offer prices . . . would be determined more
quickly and accurately”); see also Borsand col. 3, ll. 25–62, col. 6, ll. 26–55,
Figs. 2–5.
Further, Appellant’s argument (iv) does not address with particularity
the Examiner’s findings and reasons with respect to applying certain
teachings of Foster to the combination of Borro and Tilly. The Examiner
articulated a reason to combine Foster’s teachings with the combination of
Borro and Tilly that is rational on its face and supported by evidence drawn
from the record. See Final Act. 9 (“so that the bid and offer prices . . . would
be determined more quickly and accurately”); see also Foster ¶ 22.
We, therefore, sustain the Examiner’s rejection of claim 11. We also
sustain the Examiner’s rejection of claims 15–17, which are not separately
argued with particularity.

The Obviousness Rejection of Claim 13 over Borro, Tilly, Borsand, Foster,
and Lutnick
Appellant does not present separate arguments with respect to this
ground of rejection. See Appeal Br. 22–26; see also Reply Br. 9–12.
We, therefore, sustain the Examiner’s rejection of claim 13.

The Obviousness Rejection of Claim 22 over Borro, Tilly, Borsand, Foster,
and Crosthwaite
Appellant does not present separate arguments with respect to this
ground of rejection. See Appeal Br. 22–26; see also Reply Br. 9–12.
We, therefore, sustain the Examiner’s rejection of claim 22.

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The Obviousness Rejection of Claim 23 over Borro, Tilly, Borsand, Foster,
and Stevens
Appellant does not present separate arguments with respect to this
ground of rejection. See Appeal Br. 22–26; see also Reply Br. 9–12.
We, therefore, sustain the Examiner’s rejection of claim 23.

The Obviousness Rejection of Claim 24 over Borro, Tilly, Borsand, Lutnick,
Foster, and Crosthwaite
Appellant does not present separate arguments with respect to this
ground of rejection. See Appeal Br. 22–26; see also Reply Br. 9–12.
We, therefore, sustain the Examiner’s rejection of claim 24.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
11, 13, 15–
17, 22–24
101 Judicial
Exception
11, 13, 15–
17, 22–24

11, 15–17 103 Borro, Tilly,
Borsand, Foster
11, 15–17
13 103 Borro, Tilly,
Borsand, Foster,
Lutnick
13
22 103 Borro, Tilly,
Borsand, Foster,
Crosthwaite
22
23 103 Borro, Tilly,
Borsand, Foster,
Stevens
23
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24 103 Borro, Tilly,
Borsand,
Lutnick, Foster,
Crosthwait
24
Overall
Outcome
11, 13, 15–
17, 22–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED